OPPOSITION No B 2 720 798

Sebapharma GmbH & Co. KG, Binger Str. 80, 56154 Boppard, Germany (opponent), represented by Lippert Stachow Patentanwälte Rechtsanwälte Partnerschaft mbB, Frankenforster Str. 135-137, 51427 Bergisch Gladbach, Germany (professional representative)

a g a i n s t

Tenzi Sp. z o.o., Skarbimierzyce 20, 72-002 Dołuje, Poland (applicant), represented by Teco Kancelaria Patentowa Ewa Apanasewicz, Pilsudskiego 9/9, 70-422 Szczecin, Poland (professional representative).

On 28/06/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 720 798 is partially upheld, namely for the following contested goods:

Class 3: Soaps; Disinfectant soap.

Class 5: Germicides, disinfectants, and air fresheners.

2.        European Union trade mark application No 15 236 847 is rejected for all the above goods. It may proceed for the remaining goods and services.

3.        Each party bears its own costs.

REASONS:

The opponent filed an opposition against all the goods and services of European Union trade mark application No 15 236 847. The opposition is based on European Union trade mark registration No 433 573. The opponent invoked Article 8(1)(b) EUTMR.

LIKELIHOOD OF CONFUSION – ARTICLE 8(1)(b) EUTMR

A likelihood of confusion exists if there is a risk that the public might believe that the goods or services in question, under the assumption that they bear the marks in question, come from the same undertaking or, as the case may be, from economically linked undertakings. Whether a likelihood of confusion exists depends on the appreciation in a global assessment of several factors, which are interdependent. These factors include the similarity of the signs, the similarity of the goods and services, the distinctiveness of the earlier mark, the distinctive and dominant elements of the conflicting signs and the relevant public.

1. The goods and services

The goods on which the opposition is based are the following:

Class 3: Cosmetics, essential oils, dentifrice, shampoos, preparations for cleansing and care of skin, lips and hair; skin care substances for external use; baby care products, namely flannels for babies, foam baths for babies, baths for babies, skin creams for babies, oils for babies, cloths for applying oils, moist wipes and shampoos for children, powder for children; cosmetics; face lotions, facial cleansing preparations and substances in liquid and solid form, being lotions, creams and gels, water or alcohol-based solutions; bath extracts based on medicinal plants/ and herbs for cosmetic purposes; foot care products; sun-tanning and skin care preparations in the form of lotions, creams and gels, after sun skin balsam, after sun spray.

Class 5: Medical, chemical, pharmaceutical and veterinary products for medicinal purposes, healthcare and hygiene, pharmaceutical preparations for skin complaints, namely skin cleansers, being a pharmaceutical preparation for skin complaints in the form of a special substance for seborrheic conditions and microbial dermatitis (solid, liquid, lotion, cream, shampoo); bath extracts based on medicinal plants and/or herbs for pharmaceutical purposes; medicinal creams for children.

The contested goods and services are the following:

Class 3: Preparations for cleaning and preservation of leather (polishes), floor care and washing preparations, laundry preparations, stain-removing preparations, rinsing preparations, shining, polishing, and colour-removing preparations, preparations for removing lime and residues, preparations for removing wax, dull tarnishes and rust; Soaps; Disinfectant soap.

Class 5: Germicides, disinfectants, and air fresheners.

Class 37: Vehicle wash; Cleaning of vehicles and specialist apparatus; Laundering; Cleaning of seats, carpets and upholstery.

An interpretation of the wording of the list of goods and services is required to determine the scope of protection of these goods and services.

The term ‘namely’, used in the opponent’s list of goods to show the relationship of individual goods with a broader category, is exclusive and restricts the scope of protection only to the specifically listed goods.

As a preliminary remark, it is to be noted that according to Article 28(7) EUTMR, goods or services are not regarded as being similar or dissimilar to each other on the ground that they appear in the same or different classes under the Nice Classification.

The relevant factors relating to the comparison of the goods or services include, inter alia, the nature and purpose of the goods or services, the distribution channels, the sales outlets, the producers, the method of use and whether they are in competition with each other or complementary to each other.

Contested goods in Class 3

The contested soaps; disinfectant soap overlap with the opponent’s preparations for cleansing and care of skin, as the latter may include soaps. Therefore, they are identical.

The contested preparations for cleaning and preservation of leather (polishes), floor care and washing preparations, laundry preparations, stain-removing preparations, rinsing preparations, shining, polishing, and colour-removing preparations, preparations for removing lime and residues, preparations for removing wax, dull tarnishes and rust are various preparations for cleaning, polishing, laundry, etc. From the wording used to describe these goods, it can be inferred that they are meant not for personal hygiene use but rather to make something (e.g. the floor, laundry, leather) free of dirt or marks. These goods are dissimilar to the opponent’s goods in Class 3, which are all cosmetic products or products for personal hygiene, and also to the opponent’s goods in Class 5, which are mainly pharmaceutical and veterinary goods with medical purposes. These goods have different natures, different purposes and different methods of use. They are not in competition with or complementary to each other. Furthermore, they are sold through different distribution channels or in any case in different sections of supermarkets.

Contested goods in Class 5

The contested germicides, disinfectants are included in the broad category of, or overlap with, the opponent’s medical, chemical, pharmaceutical and veterinary products for medicinal purposes, healthcare and hygiene. Therefore, they are identical.

The contested air fresheners are at least similar to the opponent’s medical, chemical, pharmaceutical and veterinary products for medicinal purposes, healthcare and hygiene. These goods have to some extent the same nature and purpose, they are produced by the same undertakings, they are distributed through the same distribution channels and they target the same relevant public.

Contested services in Class 37

The contested vehicle wash; cleaning of vehicles and specialist apparatus; laundering; cleaning of seats, carpets and upholstery have nothing relevant in common with any of the opponent’s goods in Classes 3 and 5, which are cosmetics and goods for personal hygiene or goods with a medical purpose. These goods and services have different natures (goods versus services), different purposes and different methods of use. They are not in competition with or complementary to each other. Furthermore, they do not have the same distribution channels. Therefore, these goods and services are dissimilar.

2. Relevant public — degree of attention

The average consumer of the category of products concerned is deemed to be reasonably well informed and reasonably observant and circumspect. It should also be borne in mind that the average consumer’s degree of attention is likely to vary according to the category of goods or services in question.

In the present case, the goods found to be identical and similar are directed at the public at large and at a professional public with specific professional knowledge or expertise. The degree of attention may vary from average to high, depending on the specialised nature of the goods, the impact on one’s health and the frequency of purchase.

3. The signs

tensimed	TENZI
Earlier trade mark	Contested sign

The relevant territory is the European Union.

The global appreciation of the visual, aural or conceptual similarity of the marks in question must be based on the overall impression given by the marks, bearing in mind, in particular, their distinctive and dominant components (11/11/1997, C-251/95, Sabèl, EU:C:1997:528, § 23).

The earlier mark as a whole has no meaning. However, the Court has held that, although the average consumer normally perceives a mark as a whole and does not proceed to analyse its various details, the fact remains that, when perceiving a word sign, they will break it down into elements which, for them, suggest a specific meaning or which resemble words they know (13/02/2007, T-256/04, Respicur, EU:T:2007:46, § 57). Therefore, it is reasonable to assume that the meaning of the element ‘med’ will be grasped, as it will be perceived as a reference or strong allusion to ‘medical’ by a significant part of the relevant public (in German to ‘medizinisch, Medizin’; in English to ‘medical, medically, medicine’, abbreviation ‘med’, information extracted on 16/06/2017 at www.colllinsdictionary.com; in French to ‘médical’; or in Spanish to ‘médico’). Bearing in mind that the relevant goods of the earlier mark are preparations for cleansing and care of skin and medical, chemical, pharmaceutical and veterinary products for medicinal purposes, healthcare and hygiene, this element is weak for these goods, as it might be perceived as an indication that they contain active medicinal ingredients and can be used in the field of medicine. Therefore, it is considered that the element ‘tensi’, which will be perceived as meaningless by the majority of the relevant public, is the most distinctive element of the earlier mark and therefore the element on which the public will focus more.

The verbal element ‘TENZI’ of the contested sign is meaningless for the majority of the relevant public and therefore distinctive.

Visually and aurally, the signs coincide in the letters/sounds of the letters ‘ten*i’, which form the first and most distinctive element of the earlier mark and constitute almost the entirety of the contested sign. Consumers generally tend to focus on the beginning of a sign when they encounter a trade mark. This is because the public reads from left to right, which makes the part placed at the left of the sign (the initial part) the one that first catches the attention of the reader. The marks differ in the appearance and sound of their fourth letters, ‘s’ in the earlier mark and ‘z’ in the contested sign. However, the letters ‘s’ and ‘z’ are visually and in many languages also aurally very similar. Furthermore, the marks differ visually and aurally in the last element, ‘med’, of the earlier mark, which has nevertheless a limited impact on the relevant public, as it is weak. From a visual point of view, as both signs are word marks it is irrelevant whether they are written in lower case or upper case letters or a combination of both (31/01/2013, T-66/11, Babilu, EU:T:2013:48, § 57).

Therefore, the signs are visually and aurally similar to at least an average degree.

Conceptually, although a significant part of the public in the relevant territory will perceive the meaning of the element ‘med’ in the earlier mark, as explained above, the other sign has no meaning in that territory. Since one of the signs will not be associated with any meaning, the signs are not conceptually similar. However, as the element ‘med’ is weak, the impact of this conceptual difference on the relevant public will be very limited.

As the signs have been found similar in at least one aspect of the comparison, the examination of likelihood of confusion will proceed.

4. Distinctiveness of the earlier mark

The distinctiveness of the earlier mark is one of the factors to be taken into account in the global assessment of likelihood of confusion.

The opponent did not explicitly claim that its mark is particularly distinctive by virtue of intensive use or reputation.

Consequently, the assessment of the distinctiveness of the earlier mark will rest on its distinctiveness per se. In the present case, the earlier trade mark as a whole has no meaning for any of the goods in question from the perspective of the public in the relevant territory. Therefore, the distinctiveness of the earlier mark must be seen as normal, despite the presence of a weak element in the mark as stated above in section c) of this decision.

5. Global assessment, other arguments and conclusion

The appreciation of likelihood of confusion on the part of the public depends on numerous elements and, in particular, on the recognition of the earlier mark on the market, the association which can be made with the registered mark, the degree of similarity between the marks and between the goods or services identified (recital 8 of the EUTMR). It must be appreciated globally, taking into account all factors relevant to the circumstances of the case (22/06/1999, C-342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 18; 11/11/1997, C-251/95, Sabèl, EU:C:1997:528, § 22).

Such a global assessment of a likelihood of confusion implies some interdependence between the relevant factors and, in particular, similarity between the trade marks and between the goods or services. Accordingly, a greater degree of similarity between the goods may be offset by a lower degree of similarity between the marks, and vice versa (see, to that effect, 22/06/1999, C-342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 20; 11/11/1997, C-251/95, Sabèl, EU:C:1997:528, § 24; 29/09/1998, C-39/97, Canon, EU:C:1998:442, § 17).

The earlier mark has an average degree of distinctiveness. The relevant public is the public at large and the professional public, and the degree of attention will vary from average to higher than average.

Account is taken of the fact that average consumers rarely have the chance to make a direct comparison between different marks, but must trust in their imperfect recollection of them (22/06/1999, C-342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 26). Even consumers who pay a high degree of attention need to rely on their imperfect recollection of trade marks (21/11/2013, T-443/12, ancotel, EU:T:2013:605, § 54).

The conflicting goods and services are partly identical, partly similar and partly dissimilar.

The marks are visually and aurally similar to at least an average degree and, although the earlier mark evokes a certain concept as regards the element ‘med’, this will not be sufficient to distinguish the marks, since it is weak for the relevant goods.

Taking into account the similarities between the marks and the identity and similarity between the goods, the relevant public might be led to believe that the relevant goods come from the same or economically linked undertakings, even taking into account the higher degree of attention for some of the goods.

The applicant argues that there is no likelihood of confusion, since the parties are active in different fields; in particular, the applicant is a producer of professional industrial and domestic detergents while the opponent offers medicinal goods for skin and hair care. However, this is not relevant, as the comparison of the goods and services must be based on the wording indicated in the lists of goods/services. Any actual or intended use not stipulated in the list of goods/services is not relevant for the comparison since this comparison is part of the assessment of likelihood of confusion in relation to the goods/services on which the opposition is based and directed against; it is not an assessment of actual confusion or infringement (16/06/2010, T-487/08, Kremezin, EU:T:2010:237, § 71).

Considering all the above, the Opposition Division finds that there is a likelihood of confusion on the part of the public and therefore the opposition is partly well founded on the basis of the opponent’s European Union trade mark registration.

It follows from the above that the contested trade mark must be rejected for the goods found to be identical to those of the earlier trade mark.

The rest of the contested goods and services are dissimilar. As similarity of goods and services is a necessary condition for the application of Article 8(1) EUTMR, the opposition based on this article and directed at these goods cannot be successful.

COSTS

According to Article 85(1) EUTMR, the losing party in opposition proceedings must bear the fees and costs incurred by the other party. According to Article 85(2) EUTMR, where each party succeeds on some heads and fails on others, or if reasons of equity so dictate, the Opposition Division will decide a different apportionment of costs.

Since the opposition is successful only for part of the contested goods and services, both parties have succeeded on some heads and failed on others. Consequently, each party has to bear its own costs.

The Opposition Division

Marta GARCÍA COLLADO

Saida CRABBE

Ric WASLEY

According to Article 59 EUTMR, any party adversely affected by this decision has a right to appeal against this decision. According to Article 60 EUTMR, notice of appeal must be filed in writing at the Office within two months of the date of notification of this decision. It must be filed in the language of the proceedings in which the decision subject to appeal was taken. Furthermore, a written statement of the grounds of appeal must be filed within four months of the same date. The notice of appeal will be deemed to be filed only when the appeal fee of EUR 720 has been paid.